A Toe Shoe By Any Other Name

Vibram, a shoe company perhaps best known for its unique split-toe running shoe design,vibram-five-fingers-kso recently prevailed in a trademark and rights of publicity dispute against the heirs of late Ethiopian Olympic marathoner Abebe Bikila related to its use of the BIKILA name in connection with its toe shoe line without obtaining permission from the Bikila heirs.

Abebe Bikila first achieved fame in the running world by winning a gold medal in the marathon at the 1960 Rome Summer Olympic Games while running barefoot.  He went on to repeat gold at the 1964 Tokyo Summer Olympic Games.  His career, however, was tragically cut short when he was involved in a car accident that left him paralyzed, and he later died from complications from the injuries sustained from the accident.  Although his career was cut short, Bikila achieved great fame and notoriety in the running world and is considered by many to be one of the great twentieth century long-distance runners.

Vibram first introduced its line of split-toe running shoes in 2006, which are specifically designed to provide runners with a running experience similar to running barefoot.  Because of the design’s intent to mimic barefoot running, Vibram identified BIKILA as a potential product name.   Before adopting BIKILA as a product name, Vibram conducted a trademark clearance search using outside counsel.  Vibram did not, however, obtain permission from the Bikila heirs to use the name.  While the trademark opinion did not identify any significant trademark risks related to Vibram’s use of BIKILA, the opinion noted that the use of the Bikila name is “subject to any potential claims based on publicity rights from heirs, assignees, or licensees of the deceased Abebe Bikila.”  Despite the notation in the opinion regarding rights of publicity implications, Vibram moved forward with its use without permission from the family and filed (and obtained) a federal trademark registration for BIKILA for footwear in 2010.

Bikila’s heirs first learned of Vibram’s use of BIKILA at least as early as 2011 and had constructive knowledge of the proposed use of BIKILA dating back to 2009 (the date of Vibram’s filing of its federal trademark application).  Despite its awareness dating back to 2011, the heirs did not file suit against Vibram until 2015.  The complaint filed by the heirs alleged violations of federal trademark law, Washington’s Personality Rights Act, the Washington Consumer Protection Act, and unjust enrichment under Washington state law, based on Vibram’s use of the BIKILA name without the family’s permission.

Vibram brought summary judgment asking the court to dismiss the claims based on the family’s unreasonable delay in filing suit.  Vibram argued that Bikila’s 4-year delay in filing its lawsuit resulted in evidentiary and economic prejudice because Vibram continued to significantly invest in the BIKILA brand without objection from the heirs.  The heirs argued that although they delayed in bringing suit, Vibram’s infringement was willful and therefore the claims were not barred by the delay.  The willfulness argument centered around the language in the opinion noting that publicity rights may be implicated.  Therefore, the family argued that Vibram knew or should have known of the Bikila’s family’s rights in the BIKILA name and elected to proceed without obtaining permission from the family to do so and therefore its conduct was willful.

The court sided with Vibram in rejecting the Bikila family’s arguments.  Specifically, the court agreed with Vibram’s assertion that it did not act willfully in adopting BIKILA as a trademark because although the opinion pointed out potential rights of publicity implications, it did not identify trademark infringement risks and thus Vibram did not act in a willful manner counter to advise of counsel in adopting BIKILA as a trademark.  The court also found that the family’s four-year delay in filing suit was unreasonable given the evidentiary prejudice suffered by Vibram (pointing to the heirs’ own admission that they lost evidence related to their claims based on the delay), as well as the economic prejudice Vibram suffered as it continued to invest money into the BIKILA brand while the family sat on its rights.  For these reasons, the court entered summary judgment in Vibram’s favor and dismissed the Bikila family’s claims with prejudice.

Although the case was decided in Vibram’s favor, absent the delay in bringing suit, the decision may have gone the other way, and could have had a significant economic and reputational impact on Vibram.  The court noted that even with the delay the question of willfulness was a “close question.”  As a practical pointer, the case underscores the importance of ensuring that new product names are legally cleared before use, which may involve multiple layers of legal clearance, including trademark clearance and determining whether any rights of publicity or other third-party rights may be implicated.

Image Courtesy of: Natasha Chub-Afanasyeva used under Creative Commons license (no changes were made to the image).